Appeal No. 2006-2680
Application No. 10/710,187
paragraph [0018] of the Specification, and White2 (col. 1, line 10, through
col. 3, line 8). (Br. 3.)
Thus, Appellants argue that, under the art-recognized definition,
polyetherimides all have aromatic ethers, whereas the polyetherimide esters
of Liu ‘380 lack aromatic ethers, having instead aromatic esters. (Br. 3-4.)
Appellants argue that Liu ‘380 does not use the term “polyetherimide as that
term would be used in the art. Simply because the prior patentees use a
name that is to some extent misdescriptive cannot serve to convert the actual
chemical compounds described therein into something that they are not.”
(Br. 4.)
The Examiner responds that claim 1 encompasses the polyetherimide
esters of Liu ‘380 because “the Liu patents disclose materials (referred to by
Liu as a ‘polyetherimide ester’) containing at least imide and ether repeat
units.” (Answer 4.) The Examiner further urges that neither the
Encyclopedia of Polymer Science, nor White, nor Appellants’ specification,
provides “anything purporting to be a definition of ‘polyetherimide.’”
(Answer 5.)
“[T]he examiner bears the initial burden . . . of presenting a prima
facie case of unpatentability. . . . After evidence or argument is submitted
by the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument.” In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
2 White et al., U.S. Patent 4,141,927, issued February 27, 1979.
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